Video games have become so realistic sometimes I struggle to tell the difference on a computer or TV screen between what's real and what's virtual. Game developers include familiar trademarks and brands to bring authenticity to the game.
First Amendment v. Trademark
In the United States, creative works are protected as free speech by the First Amendment. Because of that protection for the whole work, a balancing act must occur between the rights of the trademark owner and the First Amendment rights that arise in the creative work. Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). If the court determines there is a likelihood of consumer confusion, it will then balance the trademark rights against the freedom of expression rights.
The standard test is is the two-prong Rogers test: 1) whether the use of the third-party trademark has artistic relevance; and 2) if so, is it deliberately misleading as to the source or content of the work. Rogers and the cases adopting its holding have consistently framed the applicable standard in terms of confusion as to the defendant's artistic work as a whole and not solely the alleged use of the defendant’s trademark.
It would probably be helpful to jump over to Tamera's article Is That Fair (Use)? Third Party Trademarks in Film, Print, Video Games and other Media for some basics on the topic of fair use and trademarks and more background on application to video games.
Virag, S.R.L. v. Sony Computer Ent. America LLC
Race cars don’t seem to bring any new twists to the Rogers test. In Virag, S.R.L. v. Sony Computer Ent. America LLC, 3:15-cv-01729 (N.D. Calif. 2015), Virag, a flooring manufacturer, sponsors the Rally of Monza Track in Formula 1 racing. This means their trademark is visual around the track. And, one of their owners, Mirco Virag is a Formula 1 race car driver. In 2010, Sony released the race car driving simulation game Gran Turismo 5 including a simulation of the Monza Track and the VIRAG trademark on a bridge in the game. The VIRAG mark was also used in Gran Turismo 6.
The court applied the Roger’s test on a Motion to Dismiss holding: 1) Since the game is focused on having a realistic race experience, using the VIRAG mark has some artistic relevance to the video game; and, under prong 2) there was no intentional misleading of consumers as to sponsorship. Gran Turismo 5 and 6 are race car simulation games. Because the VIRAG mark was used on the track and not on a race car, the court found the use was not intentionally misleading to consumers. Compare the holding and discussion in Electronic Arts, Inc. v. Textron, Inc., No. C 12-0018 (N.D. Cal. July 25, 2012).
The result of each video game case is fact-determined. What does that mean? Simply, the facts of the case determine the outcome. There's not a clear yes or no answer as to whether or not it's fair use to use a trademark you don't own in your video game.
Texas trademark lawyer Tamera Bennett will share even more of her thoughts on this topic at the TexasBarCLE Advanced IP Conference on February 18, 2016.